In a recent judgement, The Delhi High Court, presided over by Justice C. Hari Shankar, granted a permanent injunction in favour of the Plaintiff, PUMA and permanently restrained Defendant No. 1, Brijendra Singh Trading as Sastajoota from dealing, in any manner, including by way of purchase or sale, physically or online, of any product under the registered trademark of the Plaintiff “PUMA”.
Factual Background
The plaintiff is a German-based company that produces athletic shoes and clothing under the brand, “PUMA”, with a leaping PUMA mark . In addition, the plaintiff also makes use of a unique Form strip logo , which is well associated with his brand name.
It was claimed that the “PUMA” mark originated in 1948, and The Trademarks Registry recognized the Plaintiff’s Trademark as a well-known mark in India in 2020.
Defendant 1, Brijendra Singh Trading as Sastajoota, was involved in the production and sale of counterfeit PUMA products. These goods featured the Plaintiff’s PUMA and Form strip logos and were sold via its revealingly named website, www.sastajoota.com.
In January 2022, PUMA initiated a legal action against Sastajoota, claiming that the defendant was using its website to sell counterfeit PUMA shoes and apparel. PUMA asserted that the use of their Trademarks, including the PUMA word mark, the logo with a leaping PUMA and the strip logo , constituted Trademark infringement.
The plaintiff additionally submitted evidence, such as screenshots of other websites where Defendant 1’s merchandise was offered for sale, together with images of said merchandise, demonstrating that the defendants were engaged in the sale of fraudulent replica “PUMA” athletic apparel and footwear.
A similar case for infringement of registered trademark has also been filed against No. 1 in the case New Balance Athletics Inc. vs Brijendra Singh Trading as SASTAJOOTA.COM.[1] The case is pending for disposal before the High Court of Delhi, but the defendant remains absent from the proceedings of the said case as well.
Observations Of The Court
Despite multiple services and numerous opportunities being extended to the defendant, he did not enter an appearance either personally or through counsel, resulting in the Court accepting the averments made by the plaintiff following the doctrine of non-traverse.
The Court also observed that Defendant No. 1 has employed trademarks that are indistinguishable from the plaintiff’s registered trademarks on products identical to those on which the plaintiff applies its marks. Moreover, Defendant 1 is selling these goods to the exact consumer base targeted by the plaintiff, using the same distribution channels. Therefore, the current case meets the threshold of the triple identity test, which requires the alignment of marks, goods, and consumers, along with the availability of the goods through identical sources and outlets.
Taking into account the plaintiff’s established reputation and significant investment in brand promotion and advertising, the Court emphasized, drawing from the precedent set by the Delhi High Court in Jawed Ansari v. Louis Vuitton Malletier & Ors[2] that counterfeiting constitutes a serious economic offence, causing harm to brand value and misleading consumers. Consequently, the Court stressed the need for stringent measures in dealing with such cases, leaving no room for leniency.
Legal Principles Involved
- Doctrine of non-traverse
The essence of the doctrine lies in the principle that if a significant statement is not expressly denied, it is deemed admitted. According to this rule, any factual assertion must be countered either with a direct denial or an implied denial, or there should be a clear statement expressing non-admission of the fact. Failure to respond in this manner results in the presumption that the allegation is acknowledged or accepted.
The doctrine has been encapsulated under Order VIII Rules 3, 4 & 5 of the Code of Civil Procedure. The provisions are reproduced hereunder:-
Order VIII- Written Statement, Set-Off and Counter-Claim
Rule 3- Denial to be specific
It shall not be sufficient for a defendant in his written statement to deny generally the grounds alleged by the plaintiff, but the defendant must deal specifically with each allegation of fact of which he does not admit the truth, except damages.
Rule 4- Evasive denial.
Where a defendant denies an allegation of fact in the plaint, he must not do so evasively but answer the point of substance. Thus, if it is alleged that he received a certain sum of money, it shall not be sufficient to deny that he received that particular amount, but he must deny that he received that sum or any part thereof or else set out how much he received. And if an allegation is made with diverse circumstances, it shall not be sufficient to deny it along with those circumstances.
- Specific denial.
1[(1)] Every allegation of fact in the plaint, if not denied specifically or by necessary implication, or stated to be not admitted in the pleading of the defendant, shall be taken to be admitted except as against a person under disability:
Provided that the Court may, at its discretion, require any fact so admitted to be proved otherwise than by such admission.
2[(2) Where the defendant has not filed a pleading, it shall be lawful for the Court to pronounce judgment on the basis of the facts contained in the plaint, except as against a person under a disability, but the Court may, in its discretion, require any such fact to be proved.
(3) In exercising its discretion under the proviso to sub-rule (1) or under sub-rule (2), the Court shall have due regard to the fact whether the defendant could have, or has, engaged a pleader.
(4) Whenever a judgment is pronounced under this rule, a decree shall be drawn up in accordance with such judgment, and such decree shall bear the date on which the judgment was pronounced.]
The combined impact of Order VIII Rule 3, along with Rules 4 and 5 of the Code, is that the defendant is obligated to address each factual allegation that is not admitted. The defendant must either provide a clear denial or expressly state that the substance of each allegation is not admitted. Specifically, the crucial allegations that constitute the basis of the lawsuit must be explicitly denied. Any facts not expressly addressed in this manner will be presumed as admitted under Order VIII Rule 5 of the Code.
The doctrine has been further expounded upon by the Delhi High Court in the case of Suzuki Motor vs Suzuki (India) Ltd.[3] In the said judgment, the Court placed reliance on the judgments of M/s Gian Chand Brothers v Rattan Lal[4] and Badat & Co v East India Trading Co,[5] reaffirmed the doctrine of non-traverse while stating that “civil law does not confer a right on a litigant to remain silent and put the onus on the opposite party to prove”.
- Triple Identity Test
One of the fundamental and essential ingredients for maintaining an action for trademark infringement or passing off is the likelihood of deception among the consumers. This aspect is determined by applying 3 parameters, otherwise called ‘the triple identity test’. The triple identity test has been applied by the judiciary to determine the similarity between two marks w.r.t the confusion caused in the mind of the general public.
The parameters that need to be checked in order to determine if the test is satisfied or not are:
- both marks are similar or deceptively similar
- both marks are used in relation to identical goods
- the goods have an identical trading channel
The test has been used by the judiciary in a plethora of cases, Sumeet Research and Holdings Pvt. Ltd. and Ors. v. Sipra Appliances[6] & Telecare Network India Pvt. Ltd. vs. Asus Technology Pvt. Ltd. and Ors[7] being a notable few of recent in which the Delhi High Court has applied the test to establish infringement.
Decision of the Court
The Court decided in favour of the plaintiff and held that Defendant No. 1’s use of ‘PUMA; was likely to deceive consumers and constituted trademark infringement.
Accordingly, Defendant 1, as well as all others acting on its behalf, were permanently injuncted from dealing, in any manner, including by way of purchase and sale, whether physically or online, of any products, including footwear, sportswear, apparel or accessories thereof, under the marks PUMA, and Form strip logo or any other identical or deceptively similar marks or logos.
The Court also awarded a decree to the tune of actual costs incurred by the plaintiff in pursuing the litigation.
Conclusion
The decision sends a clear message against counterfeiting. This decision demonstrates the judiciary’s commitment to holding companies accountable for any infringement of Intellectual Property Rights (IPR) and protecting consumers from counterfeit products. This case extends beyond mere financial considerations.
By granting a relief of permanent injunction against the defendant, the Delhi High Court serves as a strong deterrent to potential counterfeiters and highlights the importance of fair competition and consumer protection.
First Published by: Mondaq Here
[1] CS(COMM) 339 of 2022
[2] FAO (OS) (COMM) 65/2023
[3] CS(COMM) 235/2018
[4] Civil Appeal No. 130 of 2013 (Arising out of S.L.P. (C) No. 13950 of 2009)
[5] 1964 AIR 538, 1964 SCR (4) 19
[6] CS(COMM) 428/2016
[7] CS(COMM) 731/2017
